protection des indications géographiques et commerce des biens questions legales clés acp
TRANSCRIPT
PROTECTION DES INDICATIONS GÉOGRAPHIQUES
ET COMMERCE DES BIENS: QUESTIONS LÉGALES
CLÉS ET IMPLICATIONS POUR LES PAYS
MEMBRES ACP AFRICAINS
Dr. Susan ISIKO ŠTRBA
IP Consultant
Séminaire régional sur La protection des Indications géographiques (IG)
dans les pays ACP, , Douala (Cameroon), 27 – 28 April 2010
STRUCTURE OF THE PRESENTATION
Overview of international legal
framework for the protection of GIs
Key legal issues
Implications for African ACP countries
OVERVIEW OF THE INTERNATIONAL
LEGAL FRAMEWORK FOR THE
PROTECTION OF GIS
DEFINITIONS AND PURPOSE
(ARTICLE 22.1 TRIPS)
Indications which identify a good as originating in the territory of a
Member or a region or locality in that territory, where a given
quality, reputation or other characteristics of the good are
essentially attributable to its geographical origin
The Bangui Agreement defines GI in a way similar to TRIPS
Reflect marks, signs or place names used to identify the origin,
reputation or other characteristics of products
Examples of products for which GIs are typically use: Wines,
spirits, foodstuffs, handicrafts, industrial products
THE 1958 LISBON AGREEMENTS
Protects appellations of origin
Against any usurpation or imitation,
even if the true origin or the product is
indicated by terms like
THE 1891 MADRID AGREEMENT
CONCERNING THE INTERNATIONAL
REGISTRATION OF MARKS
International registration of marks
AGREEMENT ON TRADE-RELATED ASPECTS OF
INTELLECTUAL PROPERTY RIGHTS
(TRIPS)
MINIMUM STANDARD OF PROTECTION FOR ALL
GIS (ARTICLE 22.2-4)
“interested parties” must have legal means
to prevent any use which: Misleads the public as to the geographical origin of the
good
Constitutes an act of unfair competition according to article
10bis Paris Convention
Refusal or invalidation of registration of a
trademark if use of the GI in the trademark
would mislead the public as to origin
HIGHER LEVEL OF PROTECTION FOR GIS FOR
WINES AND SPIRITS (ARTICLE 23)
Additional protection against use of a GI for wines on wines (and for spirits on spirits) not originating in the place indicated by the GI:
Without requirement to show misleading of the public or act of unfair competition;
Even where the true origin of the good is indicated, and
Even where the GI is accompanied by expressions e.g. kind, type, imitation
Against registration as a trademark with respect to wines and spirits not having the origin indicated
EXCEPTIONS TO PROTECTION OF GI
(ARTICLE 24)
Generic terms (“customary”) (art. 24.6)
Prior trademark rights (art 24.5)
Certain other prior use (art. 24.4)
Personal names (article 24.8)
GIs not protected or used in their
country or origin (art 24.9)
REGIONAL AND BILATERAL FRAMEWORKS
The Bangui Agreement (March 2, 1977)
Official recognition of GIs and appellation of origin within AOPI
Embodies national laws of Member States of OAPI
Not utilized in practice except one GI for Champagne
The Banjul Protocol on Marks (March 6, 1993)
Filing system for trademarks for Members of ARIPO
REGIONAL AND BILATERAL FRAMEWORKS
ACP-EC EPAs (Cotonou Agreement, Article 46) Need to ensure adequate and effective level of
protection for GIs in line with international standards
With a view to reducing distortions and impediments to bilateral trade
Protection considered in light of level of development (Article 46.3)
But EU enterprises would benefit from reciprocal and extended level of protection
Cooperation between parties in field of IP
Producers from third countries can register their GIs in the European Register (Council Regulation (EC) No. 510/2006)
KEY LEGAL ISSUES UNDER THE DOHA
DEVELOPMENT AGENDA
MULTILATERAL REGISTER (ART. 23.4)
Mandate and objectives In order to facilitate the protection of GIs for
wines
Negotiations shall be undertaken in the Council for TRIPs
Concerning the establishment of a multilateral legal system of notification and registration of GIs for wines eligible for protection in those Members participating in the system
Various negotiation positions
EXTENSION OF THE HIGHER LEVEL OF
PROTECTION TO PRODUCTS OTHER
THAN WINES AND SPIRITS What do proponents want?
Art. 23 to apply to all GIs
Art. 24 exceptions to apply mutatis mutandis
Multilateral register to be established shall be open to GIs for all product
Principal actors: Proponents: include EC and certain ACP countries –
Guinea, Jamaica, Kenya, Madagascar and Mauritius
Opponents: include the Dominican Republic (ACP)
Various issues are raised in relation to GI extension
THE EC “CLAW BACK” PROPOSAL IN
AGRICULTURE
A list of names currently used by producers of
agricultural products other than the right
holders in the country of origin to be
established so as to prohibit such use
The proposal intended to be complementary to
the work on GIs in the context of TRIPS
IMPLICATIONS FOR AFRICAN ACP MEMBER
STATES
POSSIBLE OPPORTUNITIES FOR PROTECTION OF
GIS (1)
Enable products to be widely recognized and
valued for their quality, which helps to
Secure premium prices for the products
Enable producers to protect themselves against
fraudulent use of these geographical names in
place. May in turn
Ensure greater returns to local producers
Encourage investment and invention
OPPORTUNITIES FOR PROTECTION OF GIS (2)
Encourage innovation while providing an
enabling environment for the products be more
widely recognised and valued for their quality
Promote trade and help a country’s products
channel into foreign markets
Lead to increased rents from the GI which
would promote development in other sectors
like agriculture and industry.
CHALLENGES RELATED TO SETTING UP AND
MAINTAINING A GI LEGAL FRAMEWORK (1)
GIs in their own are likely not to be sufficient to provide significant incentives for building markets
Necessary complements to establishment and maintenance of a GI framework
Appropriate legal framework
Availability of other forms of IPRs, in particular trademarks, trade secrets and design protection
Competition regulation
Standards
CHALLENGES RELATED TO SETTING UP AND
MAINTAINING A GI LEGAL FRAMEWORK (2)
Appropriate institutional framework
Producers’ and manufacturers’ associations
Administrative and quality control agencies
Enforcement agencies
Technical and financial assistance
Establishment of the link between origin and product characteristics
Continuous marketing efforts
Continuous quality control
CHALLENGES RELATED TO SETTING UP AND
MAINTAINING A GI LEGAL FRAMEWORK (3)
Other challenges and barriers (1)
Difficulty in Acquiring/identifying products that can find new markets at a fair price
Making available sufficient information and analysis of what amounts to GIs
Minimum use of GI registration in Africa (only Champagne in OAPI)
Lack of evidence on the benefits and/losses of increased protection for GIs in African ACP countries
CHALLENGES RELATED TO SETTING UP AND
MAINTAINING A GI LEGAL FRAMEWORK (4)
Other challenges and barriers (2)
Imposing restrictions on local producers to renaming,
labelling, remarketing and rebranding
Fragmentation of the market among developing
countries and thus loss of competitiveness with
respect to developed countries
Creation of competition among products of developing
countries and thus loss of bargaining power with
developed countries
CHALLENGES RELATED TO SETTING UP AND
MAINTAINING A GI LEGAL FRAMEWORK (5)
Other challenges and barriers (3)
GIs do not guarantee access to foreign markets
Compliance with foreign sanitary requirements
Compliance with foreign GIs administrative systems
E.g., EU Regulation 510/2006 – national inspection structures required for marketing of all GI agricultural products within the EU
THINGS TO CONSIDER OR BE CAUTIOUS ABOUT (1)
Economic and social benefits (costs) of GIs
protection in a given region are difficult to
assess
Identifying the products which can benefit
from GI protection and are tradable, both
within the region and internationally, before
elaborating standards for GI protection within
the ACP or at national level.
THINGS TO CONSIDER OR BE CAUTIOUS ABOUT (2)
Developing empirical studies, based on country or sub-regional and product case studies, to help determine whether the advantages of protecting GIs outweigh the disadvantages and vice versa.
This should form the basis for the African ACP States in engaging in the Doha negotiations on the establishment of the multilateral register for wines and spirits and the proposed extension of protection to products other than wines and spirits under Article 23 of the TRIPs Agreement
